DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-5 are pending.
Priority
This application is filed 10/15/2024, and claims the benefit of domestic priority as below:
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Information Disclosure Statements
Three IDS(s) received on 10/15/2024, 9/10/2025 and 4/01/2026 have been considered unless marked with a strikethrough.
Abstract
The abstract of the disclosure is objected to because the abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. Currently, the abstract has 13 words.
The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The current submitted abstract is the front pages of PCT application. Examiner requests to bring in narrative form to satisfy the abstract requirement.
Correction is required. See MPEP § 608.01(b).
Claim interpretation
Claims are interpreted in accordance with the broadest reasonable interpretation (BRI) standard
consistent with the specification (See MPEP 2111).
In the claim 1, it is possible to interpret the claims as allowing P and P1 to be selected independently. However, since the reaction scheme provides sufficient context for a person skilled in the art to understand the intended correspondence between the two groups, the relationship between P and P1 does not appear a substantial indefiniteness issue. Nevertheless, explicitly stating this correspondence in the claims would enhance clarity and prevent an interpretation where P and P1 could be selected independently. For example, where P is benzyl in the Formula 2, the reaction scheme shows that hydrogenation removes the benzyl protecting group, such that P1 is hydrogen in the resulting product. In view of this disclosed transformation, a person of ordinary skill in the art would understand that P and P1 are not arbitrary, independently selected substituents, but correspond to the groups present before and after the claim reaction.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (Novel Lead Generation through Hypothetical Pharmacophore Three-Dimensional Database Searching: Discovery of Isoflavonoids as Nonsteroidal Inhibitors of Rat 5α-Reductase, J. Med. Chem. 2001, 44(23), 3759–3763, pub’d 10/10/2001)
Chen teaches a compound represented by Formula 2, wherein the substituents are selected from the alternatives recited in the claim. Chen’s compound 19c has R1/R2 are H, R3 is OCH3, R4/R5 are CH3, P is Bn and n is 2 that corresponds to Formula 2.
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Instant Formula 2 Chen’s compound 19c
Art of Record but not Applied
Boonyaketgosona et al. (Tetrahedron Letters, 56, 2015, 1057–1059) disclose the dehydration of compound 2 to prepare compound 7 and teaches the general use of a dehydration reaction to form an unsaturated cyclic compound. However, Boonyaketgosona does not teach the use the instant starting material and every limitations of claim 1. Accordingly, Boonyaketgosona lacks enough of the same embodiments to qualify as 103 prior art.
US10669282B2 discloses the synthesis of the same target compound (i.e., Formula 3 of the present application), however, it does not contain the same embodiment sufficient to qualify as prior art under 35 U.S.C. § 103, as it employs starting materials and intermediates that differ from those used in the synthetic route involving reduction and cyclization reactions.
Conclusion
Claims 1-4 are allowed.
Claim 5 is rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEONG JONG KIM whose telephone number is (571)272-6918. The examiner can normally be reached 7:00am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A. Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEONG JONG KIM/ Examiner, Art Unit 1621
/CLINTON A BROOKS/ Supervisory Patent Examiner, Art Unit 1621
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